Filing your patent application is an exciting part of the process. But the chances of your patent being rejected will always loom large over your head. Thankfully, there are steps that you can take when the patent examiner rejects your patent.
Dealing with your patent getting rejected is also a part of the process. In a Yale University study of over 2.15 million US patent applications from 1996 to mid-2013, more than 90% of them were rejected. So if you have filed a patent and it has been rejected, do not fret, you can argue against the examiner’s rejection and get things fixed.
Before you go about arguing against the rejection, make sure that you know why your patent application has been rejected in the first place. When you understand the reason behind the rejection, you will be able to find a common ground and will also be in a position to seek the right kind of counsel.
Who denies your patents?
The rejection or approval of patents happens at the patent office. Since there are a large number of patent applications that they receive, you should make it easy for the patent examiner to go through your application with ease. Ensure that your invention is patentable, unique, and non-obvious. Indulge in patent search to make sure that there is nothing similar to your invention. Give enough reasons for the patent examiner to approve your patent application.
Why do patent requests get rejected?
For your patent to be approved, it has to pass the patentability criteria. Below are some of the criteria.
Your invention is obvious- If your invention is not unique enough, then the chances of your application getting rejected is high. Your invention must at least be different from other inventions that are similar to yours.
Poorly filled application- If your application is dotted with errors, you run the risk of getting your application rejected. Ensure that you follow all the guidelines that are to be met when drafting the application. To bring validity to your claims, add as much technical details as possible in a way that everyone can understand.
Your invention is not novel- The invention for which you are seeking a patent should be the first of its kind. Before you file the application, it is wise to do a patent search to find the novelty of your invention.
The importance of hiring a patent firm:
While there are a number of measures that you can take to increase the chances of your patent application being accepted, there is a crucial step that you can take to swing things in your favor. If you want a highly efficient solution, then it is wise to seek the expertise of a patent firm. They will not only help you in drafting the patent application, but will also be available throughout the entire process. A reputed intellectual property (IP) firm will have a team of experts who will help you wade through the process efficiently.
Steps to take when the patent examiner rejects your patent:
- Show why your invention is different:
There are chances that the patent examiner is misinterpreting the prior art incorrectly or too broadly. Or they may be applying the prior art references wrongly. What you can do in such a scenario is to argue how certain claim features are not found in the referenced prior arts. The examiner will then review your arguments, and two things can happen.
- They can review your arguments, agree with them and find new references (or)
- Disagree with your arguments and maintain their stance on rejecting your patent.
Here is what you can do in this scenario. Take the drawings that have been filed in the initial application and highlight a component or a processing step which isn’t shown in the records. You can ask the examiner-”Our invention has X, can you find X in the art of record?”
- Adjust or modify your claims:
There are times when the examiner wants you to make the application easy to understand, so they would advise you to phrase your claims differently. If you make the changes that they have suggested, then the issue could be resolved.
How you phrase your invention on your patent application has a huge impact. Using irregular terminology or slang is one reason why many patent applications get rejected. Having the advice of an experienced IP team will solve this issue as they are more careful while writing down your invention in the application and are better equipped to handle the entire process.
- Show how your invention works:
There are times when the patent examiner gets back with a comment that reads-”Does the invention work?”
Here’s what you need to do in this scenario.
- Explain the landscape of relevant technology which existed before your invention.
- Explain how your device works.
One of the best ways to explain your invention clearly is to make a video where you outline everything about your invention. If you can schedule a direct meeting with the patent examiner, you can describe your invention directly.
- Check if your patent application is complete:
The first thing that the patent office will review is your application and see if it includes all the necessary parts. To move your application to the next process, the examiner will even go through the technical aspects of your patent application.
For your patent application to be complete, the following should be included:
- At least one patent claim
- Inventor’s oath or declaration
- Payment for filing the application
- Drawings to describe the invention, if necessary
If any of these are not met, the patent office will get back to you saying that you have submitted an ‘incomplete’ application.
Your objective should be to convince the patent examiner to allow your claims by modifying them and also by presenting your case properly. It may take a bunch of responses before you can find a middle ground and get your patent application approved. Do not worry about getting your patent rejected, you can make changes to address the objections raised by the examiner.
If you are looking for a one-stop IP solution, ResearchWire is more than happy to onboard you as a partner.When you are not sure about what to do when the patent examiner rejects your patent, get in touch with us- and we can help with next steps.